What should an examiner do if they become aware of litigation during the examination of a reissue application?

If an examiner becomes aware of litigation involving the patent sought to be reissued during the examination process, and the applicant has not provided details about this litigation, the examiner should take the following steps: In the next Office action, inquire about the litigation details. Use Form paragraph 14.06 for this inquiry. If the litigation…

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Can an examiner request rehearing of a PTAB decision?

Yes, an examiner can request rehearing of a Patent Trial and Appeal Board (PTAB) decision. However, this process is subject to specific guidelines and approvals. The MPEP states: “The examiner may request rehearing of the Board decision. Such a request should normally be made within 2 months of the return of the application to the…

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What should be included in an examiner’s request for rehearing of a PTAB decision?

When an examiner requests rehearing of a Patent Trial and Appeal Board (PTAB) decision, the request must meet specific content requirements. The MPEP 1214.04 outlines these requirements: “The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” This means the examiner must clearly identify and…

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What should an examiner do when reviewing a reissue application related to litigation or PTAB trials?

When reviewing a reissue application, an examiner should: Determine if the patent for which reissue is filed is involved in litigation or a pending PTAB trial Check the status of any litigation or PTAB trial Consult MPEP § 1442.02 to determine if prosecution should be suspended Inquire about specific litigation details if not already provided…

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What should an examiner do if they know of references that could lead to rejection after a PTAB reversal?

If an examiner has specific knowledge of references that could lead to rejection of claims after a Patent Trial and Appeal Board (PTAB) reversal, they should not immediately reject the claims. Instead, the MPEP outlines a specific procedure: “If the examiner has specific knowledge of the existence of a particular reference or references which indicate…

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How does an examiner handle species that are not patentably distinct?

When an examiner encounters species that are not patentably distinct, they should group these species together. The MPEP 809.02(a) provides guidance: “In making a requirement for restriction in an application claiming plural species, the examiner should group together species considered clearly unpatentable over each other.” The examiner’s approach includes: Identifying species that are obvious variants…

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How does the examiner determine if a reference qualifies for the prior art exception under AIA 35 U.S.C. 102(b)(2)(C)?

How does the examiner determine if a reference qualifies for the prior art exception under AIA 35 U.S.C. 102(b)(2)(C)? The examiner follows a specific procedure to determine if a reference qualifies for the prior art exception under AIA 35 U.S.C. 102(b)(2)(C). According to MPEP 717.02(c): “If the applicant provides a proper statement asserting common ownership…

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